Adidas loses its stripes
This week, one of Adidas’s three stripes trade marks was declared invalid by the European General Court – as Chartered Trade Mark Attorney Graeme Murray explains.
To most of us, three stripes is synonymous with Adidas and its branding. However, the recent decision of the General Court serves as a vital reminder for businesses on the importance of strategic planning before filing your trade marks, even for big brands.
Adidas was trying to claim a broader scope for this European Union trade mark than was granted in its application:
The registration also included the description: “The mark consists of three parallel equidistant stripes of identical width, applied on the product in any direction”.
On 19th June 2019 the General Court confirmed the invalidity of the above European Union Trade Mark registration, upholding an earlier decision of the European Union Intellectual Property Office Second Board of Appeal.
Interpretation of the mark as registered
It is essential that a trade mark application correctly sets out exactly what the applicant is seeking to protect. It is not possible to claim a scope of protection which is over and above what is presented and defined in the application.
Adidas sought to argue that the mark was a pattern mark and therefore capable of extending to use in various dimensions and proportions.
However, the General Court upheld the Board of Appeal’s decision that the scope of protection was limited to the mark in the exact form registered.
The General Court highlighted that Adidas had indicated in its application that the mark was a figurative mark and had made no reference to the mark being a pattern mark.
As a result, the registration could only extend to the lines presented in the dimensions and proportions reflected in the mark subject of the registration.
Evidence of use of marks which differed to the mark as registered
The scope of protection granted to the registration was therefore narrower than Adidas originally intended and this had a direct impact upon the Court’s assessment of the evidence of use Adidas had submitted in the proceedings.
In certain circumstances it is possible to rely upon evidence of use of a trade mark which differs to a mark as registered if the differences have no impact upon the distinctive character of the mark.
In defending the invalidity action Adidas argued that the mark had acquired distinctiveness in the EU and submitted evidence of it in use to support that claim. However a significant proportion of the evidence submitted related to use of three stripes in forms which differed to the mark as registered.
Adidas argued that the evidence related to use of variations which did not alter the distinctive character of the registered mark, and submitted that the evidence should therefore be accepted.
However the General Court agreed with the Board of Appeal’s decision to refuse the evidence of use of marks which differed to the mark as registered, reiterating the following points:
(i) where a trade mark is extremely simple, even a slight difference could lead to a significant alteration to the characteristics of the mark as it had been registered;
(ii) use of the mark at issue in the form where the colour scheme is reversed necessarily alters the distinctive character of that mark
(iii) some of the evidence showed a sign with two instead of three stripes and
(iv) the use of sloping stripes altered the distinctive character of that mark.
Acquired distinctiveness throughout the EU
Adidas’s defence to the invalidity action was based on its claim that the mark had acquired distinctive character throughout the EU by virtue of the use made of it and was therefore capable of registration on that basis.
As a large amount of the evidence submitted was deemed to relate to marks which were not included in the scope of the registration, Adidas was essentially left with five market surveys from five EU member states to support its claim.
Whilst it is possible to extrapolate evidence in a number of member states to the entire territory of the EU, in this instance it was held that five market surveys in five EU member states was not sufficient.
All is not lost for Adidas as it does own a number of trade mark registrations for various forms of its three stripes mark. However, this case is an example of the importance of strategic planning before filing a trade mark application.
Adidas was seeking to claim a broader scope of rights than it was granted and the drafting of the application impacted upon the Court’s interpretation of the registration.
The decision also highlights the importance of evidence in trade mark proceedings. Understanding what your registration protects and ensuring that your use reflects what is protected, as well as retaining good records of such use, is very important should you later seek to enforce your registered rights, or as here have to defend an action to cancel your registration.
Finally, the decision highlights the increasing difficulty associated with proving use throughout the EU.
All of these issues are extremely complex, and you should therefore seriously consider instructing a Chartered Trade Mark Attorney from the outset in order to ensure that you are properly advised on your proposed application and on the subsequent maintenance, enforcement and defence of your registered rights.
Graeme Murray is a Chartered Trade Mark Attorney at Marks & Clerk LLP
Marks & Clerk LLP